Ex Parte Dai

Board of Patent Appeals and Interferences

Nov 6, 2008

11001835 (B.P.A.I. Nov. 6, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JIAN DAI
____________

Appeal 2008-3762
Application 11/001,835
Technology Center 3600
____________

Decided: November 6, 2008
____________

Before DEMETRA J. MILLS, ERIC GRIMES, and RICHARD M.
LEBOVITZ, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the final rejection of claims 1-15.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.

STATEMENT OF THE CASE
The claims are directed to an insect capturing apparatus comprising a
Stirling engine which converts heat energy into kinetic energy. The kinetic
Appeal 2008-3762
Application 11/001,835

energy is utilized to generate a gaseous flow which is involved with
attracting insects into the apparatus and capturing them.
Claims 1-15 are pending and stand rejected by the Examiner as
follows:
1) Claims 1-12, 14, and 15 under 35 U.S.C. § 103 as obvious over
Durand (US Pat. App. 2003/0084604 A1, published May 8, 2003) in view of
Hanson (US Pat. No. 4,070,860, Jan. 31, 1978) (Ans. 3); and
2) Claim 13 under 35 U.S.C. § 103 as obvious over Durand in view of
Hanson and Snell (U.S. Pat. No. 6,792,713 B2, Sept. 21, 2004) (Ans. 3).
Claims 1, 6, 7, and 12, which read as follows, are representative:
1. An insect capturing apparatus comprising:
a Stirling engine, said Stirling engine configured to
convert heat energy directly to kinetic energy, said kinetic
energy directly working to generate a gaseous flow;
a receptacle in communication with said gaseous flow,
wherein the receptacle receives insects; and
insect-attractive chemicals, wherein the insect-attractive
chemicals are emitted away from the apparatus by said gaseous
flow to attract insects to the apparatus.

6. The apparatus of claim 1, wherein the Stirling engine is an
acoustic heat engine utilizing no moving mechanical elements
to generate the gaseous flow.

7. An insect capturing apparatus comprising:
a heat source, wherein said heat source produces insect-
attractive chemical emissions; and
a Stirling engine, operably associated with said heat
source, wherein the Stirling engine is configured to convert heat
energy from the heat source directly into kinetic energy,
wherein said kinetic energy directly facilitates the generation of
gaseous flow to detain insects within the apparatus,
wherein the gaseous flow expels the insect-attractive
chemical emissions away from the apparatus.
2
Appeal 2008-3762
Application 11/001,835

12. A method of capturing insects, said method comprising:
providing a receptacle having an inlet through which
insects can enter into said receptacle;
providing insect-attractive chemical emissions, said
emissions produced by a heat source supplying heat energy to a
Stirling engine; and
mixing said insect-attractive chemical emissions with a
gaseous flow directly generated by kinetic energy directly
converted from heat energy by the Stirling engine, said gaseous
flow facilitating introduction of insects within said receptacle
and conveying said insect-attractive chemical emissions away
from the apparatus to attract insects to the apparatus.

OBVIOUSNESS OVER DURAND AND HANSON
Claims 1-12, 14, and 15 stand rejected under 35 U.S.C. § 103(a) as
obvious over Durand in view of Hanson.
The claims are drawn to an insect capturing apparatus comprising a
Stirling engine configured to convert heat energy to kinetic energy to
generate a gaseous flow which is then utilized to attract insects.
Issue
The Examiner’s position is that Durand describes an insect trap
having insect attracting chemicals, such as carbon dioxide, which are
emitted from the apparatus by a gaseous flow generated by a fan as in claims
1, 7, and 12. The fan described in Durand is powered by electricity, not
kinetic energy as in the claims, but the Examiner asserts that Durand
suggests other energy sources can be used. The Examiner cites Hanson for
its teaching of a Stirling engine as an alternative energy source to convert
heat energy to kinetic energy which could be utilized to generate the gaseous
flow as recited in claim 1. The Examiner concludes that “it would have been
3
Appeal 2008-3762
Application 11/001,835

obvious to provide Durand with a Sterling [sic] engine as shown by Hanson
for the purpose of powering the fan by the kinetic energy which is produced
by the Sterling [sic] engine to employ the device in locations where
electrical power is not available” (Final Rejection 3).
Appellant contends that it would not have obvious to have used a
Stirling engine to power the fan in Durand’s device because Durand teaches
that thermal energy may be converted into electrical energy, not into kinetic
energy as required by all the claims (App. Br. 8-9).
Thus, the issue in this rejection is whether it would have been obvious
to persons of ordinary skill in the art to have modified Durand’s insect trap
by using a Stirling engine to drive its fan instead of electrical energy.

Findings of Fact
Scope and content of the prior art
THE DURAND PATENT
1. Durand describes a flying insect trapping device that comprises a
combustion device. The combustion device carries a catalytic element that
converts carbon monoxide to carbon dioxide which is emitted as an exhaust
gas (Durand, at 3, ¶ 26).
2. The exhaust gas flows outwardly through an exhaust outlet “so that
insects attracted to the carbon dioxide in the exhaust gas will fly towards the
exhaust outlet” (Durand, at 3, ¶ 27).
3. “A vacuum device communicated to the insect inlet is constructed and
arranged to draw insects attracted to the exhaust outlet through the insect
inlet and into the insect trap chamber” ( Durand, at 3, ¶ 27).
4
Appeal 2008-3762
Application 11/001,835

4. In operating the combustion device, fuel is sprayed into the combustion
chamber and mixed with air provided by a fan (Durand, at 7, ¶ 72; see fan 54
as shown in Durand’s Fig. 6).
5. “[T]urbulence is desirable to ensure that the fuel and air mix together
thoroughly. However, turbulence is undesirable at the combustion point.
Thus, the diffuser plate 114 functions to initially reduce the turbulence”
(Durand, at 7, ¶ 72).
6. “The air fuel mixture is burned by combustion to create a heated exhaust
gas” that includes carbon monoxide, which is converted to carbon dioxide in
the catalytic converter (Durand, at 7, ¶ 73).
7. The fan 54 is powered by electrical power (Durand, at 8, ¶ 77).
8. The fan also functions to create the vacuum for drawing insects into the
intake port (Durand, at 8, ¶ 78) and into a trap chamber (id. at 5, ¶ 58) (FF3).
9. The “power for driving the fan 54 and any other components may be
derived from other sources, such as batteries, solar panels, or the conversion
of thermal energy from the combustion process into electrical energy”
(Durand, at 8, ¶ 77).
THE HANSON PATENT
10. Hanson describes a device known as a Stirling engine which uses heat
from an internal combustion engine to provide mechanical power or work to
operate mechanical or electrical automobile accessories (Hanson, at col. 1,
ll. 44-48; at col. 2, ll. 40-67; col. 3, l. 33 to col. 4, l. 30). As explained in
detail at column 3, line 33 to column 4, line 30, the “heat source is employed
to reciprocally drive a displacer and a piston operated crankshaft for
imparting rotary motion to a driven device connected to the crankshaft for
effecting work” (id. at col. 4, ll. 32-36).
5
Appeal 2008-3762
Application 11/001,835

Difference between the prior art and the claimed invention
11. Durand describes an insect capturing apparatus with a receptacle
(“insect trap chamber”) to receive or detain insects (FF2, 3, 9) as in claims 1,
7, and 12.
12. Durand also describes a “gaseous flow” as in claims 1, 7, and 12, but the
flow is created by a fan driven by electrical power, not “kinetic energy” as in
the claims.

Level of skill in the art
13. Persons of ordinary skill in the art were familiar with the operation of a
Stirling engine and the principle of converting thermal energy into kinetic
(FF10) and electrical energy (FF9).
14. Person of ordinary skill in the art knew how to design a Stirling engine
to operate mechanical and electrical devices (FF10).

Reason to combine the prior art
15. In view of Durand’s teaching that the power for the fan can be derived
from other sources (FF9), the Examiner states that “it would have been
obvious to provide Durand with a Sterling [sic] engine as shown by Hanson
for the purpose of powering the fan by the kinetic energy which is produced
by the Sterling engine [sic] to employ the device in locations where
electrical power is not available” (Final Rejection 3).

Analysis
In making an obviousness determination, the Examiner has the burden
of establishing prima facie obviousness of the claimed invention. This
6
Appeal 2008-3762
Application 11/001,835

involves providing evidence that all of the elements of the claimed invention
are disclosed or suggested in the prior art and then a reason to combine them
to have made the claimed invention. See In re Kumar, 418 F.3d 1361, 1366
(Fed. Cir. 2005); KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741
(2007). In this case, the Examiner has provided adequate evidence to
establish all the elements of the claimed invention in the prior art (FF1-12)
and a logical reason to have combined them (FF15). Thus, we turn to
Appellant’s rebuttal arguments and evidence. In re Oetiker, 977 F2d 1443,
1445 (Fed. Cir. 1992).
Appellant acknowledges that Durand states that other sources of
energy may be utilized to power its fan (App. Br. 8; FF9). However,
Appellant argues that “a correct understanding of the teachings of Durand et
al. reveals that the fan may be powered by several means and other sources
through the use of electrical energy”, not kinetic energy as claimed (App.
Br. 9). Appellant contends that the modification of Durand by replacing the
electrical power source with the Stirling engine “would change the principle
of operation of the prior art invention being modified” and thus the
references are not sufficient to “render” the claims obvious (id.).
This argument does not convince us that the Examiner erred. Durand
explicitly states that “thermal energy from the combustion process” can be
utilized to power the fan (FF9), but does not disclose that the thermal energy
could be used to produce kinetic energy. However, Durand’s suggestion that
the thermal energy from the combustion process could be used as an
alternative energy source would have reasonably suggested to persons of
ordinary that a Stirling engine be utilized since it operates on the same
general principle of converting thermal energy into another energy form. As
7
Appeal 2008-3762
Application 11/001,835

evidenced by the prior art, persons of ordinary skill in the art were familiar
with the operation of a Stirling engine and the principle of converting
thermal energy into kinetic and electrical energy (FF9, 10, 13). Persons of
ordinary skill in the art would therefore have recognized a Stirling engine as
equivalent alternative to energy source for converting thermal energy into
electrical energy as disclosed by Durand, and would therefore have had
reason to have used it in place of electricity in Durand’s insect trapping
device. “[W]hen a patent ‘simply arranges old elements with each
performing the same function it had been known to perform’ and yields no
more than one would expect from such an arrangement, the combination is
obvious.” KSR, 127 S.Ct. at 1740.
The use of a Hanson’s Stirling engine in place of the fan’s electrical
power source is arguably a different “principle of operation” as pointed out
by Appellant, but only in that it transforms the thermal energy into kinetic
energy, not electrical energy. We do not see how this difference would
“impermissibly change” Durand’s principle of operation and be insufficient
in combination with Hanson to reach the subject of claim 1. Hanson
provides explicit direction on how a Stirling engine operates. Based on
Hanson’s disclosure, we find that persons of ordinary skill in the art were
familiar with the operation of a Stirling engine and the principle of
converting thermal energy into kinetic energy and would have known how to
design a Stirling engine to operate mechanical devices like a fan (FF13-14).
Indeed, Hanson states its Stirling engine can be used to provide mechanical
power or work to operate mechanical devices (FF10), providing an explicit
reason to have utilized it to drive Durand’s fan. We find that the substitution
8
Appeal 2008-3762
Application 11/001,835

of Hanson’s engine into Durand’s device would have been well within the
ordinary level of skill in the art.
Appellant argues that Hanson does not teach a “fan” and that persons
of ordinary skill in the art would not equate automobile accessories, as
taught in Hanson, with a fan or insect trapping device as in Durand (App. Br.
12). This argument is not persuasive. Hanson is relied upon for its general
teaching of a way to convert thermal energy into kinetic energy and that the
Stirling engine can be a source of energy for driving mechanical devices.
Appellant contends that persons of ordinary skill in the art would not
have utilized a Stirling engine because of its recognized drawbacks (Reply
Br. 3). For instance, Appellant argues that a “Stirling engine powered fan
would produce an inconsistent airflow, which would go against” Durand’s
“desire . . . to have a homogenous and laminar flow” (id. at 4).
This argument is not persuasive. First, Appellant has not provided
any evidence that the Stirling engine would be inadequate to power
Durand’s fan. Arguments of counsel cannot take the place of evidence
lacking in the record. Estee Lauder Inc. v. L'Oreal, S.A., 129 F.3d 588, 595
(Fed. Cir. 1997). Second, Durand teaches using a diffuser plate to control
air flow (FF5) which would appear to address “inconsistent airflow”
associated with a fan.
For the foregoing reasons, we affirm the rejection of claim 1. Claims
2-5 fall with claim 1 because separate reasons for their patentability were not
provided. 37 C.F.R. § 41.37(c)(1)(vii).

9
Appeal 2008-3762
Application 11/001,835

Claim 7
Claim 7 recites that the “kinetic energy directly facilitates the
generation of a gaseous flow . . . wherein the gaseous flow expels the insect-
attractive emissions away from the apparatus.” Appellant contends that the
subject matter would not have been obvious because “the insect attractive
chemical emissions are not expelled by a gaseous flow directly facilitated by
the kinetic energy conversion of the Stirling engine, as required by claim 7”
(App. Br. 14). Appellant argues that the emissions in Durand’s device “are
carried away through an exhaust system” (id.).
This argument is not persuasive. Claim 7 states that the “kinetic
energy directly facilitates the generation of the gaseous flow.” The claim
does not require the kinetic energy to directly generate the flow, only that it
“directly facilitates” its generation. The term “facilitate” means “[t]o free
from difficulties or obstacles; make easier; aid; assist.”1 In Durand, air
provided by a fan is mixed with fuel and then burned by combustion to
produce an exhaust gas comprised of carbon dioxide which acts as an insect-
attractant (FF1, 2, 4, 6). The carbon dioxide – the insect attractive emission
in claim 7 – is expelled in the exhaust emissions. The carbon dioxide
emission is “facilitated” by air produced by the fan because the fan air “aids”
or “assists” in its creation and subsequent expulsion from the device. In
other words, we interpret the requirement in claim 7 that the “kinetic energy
directly facilitates the generation of the gaseous flow” to cover the use of
kinetic energy to assist in the production of a gaseous flow, e.g., by feeding
air into a combustion chamber where fuel is burned to produce a gaseous
flow. Because this situation occurs in Durand, we affirm the rejection of

1 The American Heritage Dictionary 469 (1976).
10
Appeal 2008-3762
Application 11/001,835

claim 7. Claims 8, 9, and 11, which depend on claim 7, fall with claim 7
because separate reasons for their patentability were not provided. 37 C.F.R.
§ 41.37(c)(1)(vii).

Claim 12
With respect to claim 12, Appellant argues that:
one of ordinary skill would not look to the cited combination
for the accomplishment of method steps related to the claimed
invention because the field of art of methodology pertinent to
each of the related references is non-analogous. A person of
ordinary skill seeking to capture insects via provision of
“insect-attractive chemical emissions, said emissions produced
by a heat source supplying heat energy to a Stirling engine; and
mixing said insect-attractive chemical emissions with a gaseous
flow directly generated by kinetic energy directly converted
from heat energy by the Stirling engine, said gaseous flow
facilitating introduction of insects within said receptacle,”
would not look to a reference for an automobile accessory
engine drawing heat from the internal combustion engine of a
car.
(App. Br. 15.)
Two criteria have evolved for determining whether prior
art is analogous: (1) whether the art is from the same field of
endeavor, regardless of the problem addressed, and (2) if the
reference is not within the field of the inventor's endeavor,
whether the reference still is reasonably pertinent to the
particular problem with which the inventor is involved.

In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992). In this case, we agree
with the Examiner that Hanson is reasonably pertinent to Durand since
Durand suggests utilizing thermal energy to power its fans and Hanson
describes a device that utilizes thermal energy to provide mechanical power
or work to operate mechanical devices. Thus, Hanson’s device is relevant
11
Appeal 2008-3762
Application 11/001,835

when considering alternative power sources as suggested in Durand and
utilized in the claimed invention.
We affirm the rejection of claim 12. Dependent claims 13 and 15 fall
with claim 12 because separate reasons for their patentability were not put
forth. 37 C.F.R. § 41.37(c)(1)(vii).

Claims 6, 10, and 14
Claims 6, 10, and 14 recite that “the Stirling engine is an acoustic heat
engine utilizing no moving mechanical elements to generate the gaseous
flow.” The Stirling engine described by Hanson utilizes the motion of a
piston to accomplish work. The Examiner acknowledges that Hanson does
not disclose an acoustic engine with no moving parts as claimed, but asserts
that “it would have been obvious to employ an old and well known acoustic
heat engine to generate a gaseous flow since the function is the same” (Final
Rejection 3).
Appellant contends “[a] fan, be it an electric fan or a non-electric fan,
clearly has moving parts. However, an ‘acoustic’ Stirling engine generates a
gaseous flow without moving parts. The structural and functional limitations
of the claims simply are not satisfied by the disclosure of the cited
references” (App. Br. 17).
It is the Examiner’s burden to establish prima facie obviousness of the
claims. In this case, the Examiner has not explained how an acoustic engine
with no moving parts would generate a gaseous flow nor has the Examiner
provided a reference that describes an acoustic Stirling engine. Thus,
because there is inadequate evidence to support a conclusion of obviousness,
we are compelled to reverse the rejection of claims 6, 10, and 14.
12
Appeal 2008-3762
Application 11/001,835

OBVIOUSNESS OVER DURAND, HANSON, AND SNELL
Claim 13 stands rejected under 35 U.S.C. § 103 as obvious over
Durand in view of Hanson and Snell.
As Appellant does not provide separate arguments for claim 13 (App.
Br. 20), we summarily affirm its rejection for the same reason as for claim
12 upon which it depends.

CONCLUSION
The rejections of claims 1-5, 7-9, 11-13, and 15 are affirmed. The
rejection of claims 6, 10, and 14 is reversed.

TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

Ssc:

SCHMEISER, OLSEN & WATTS
22 CENTURY HILL DRIVE
SUITE 302
LATHAM, NY 12110

13